Sd3, LLC v. Dudas ( 2016 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
SD3, LLC,
Plaintiff
v. Civil Case No. 08-CV-1242
MICHELLE K. LEE, Under Secretary for
Intellectual Property and Director, United
States Patent and Tradernark Oftice,
Defendant
\_/\_/\_/\_/\_/VV\/\./\./\/\./
MEMORANDUM OPINION, FINDINGS OF FACT,
AND CONCLUSIONS OF LAW
Plaintiff SD3, LLC (“SD3”) brought this action under 35 U.S.C. § 145 (2002)1
to set aside a decision by the United States Patent Oftice (“PTO”) Board of Patent
Appeals and Interferences (“BPAI”) rejecting a patent application by SD3 for safety
technology associated With power tools, and more specifically, power cutting tools.
This case, Was tried to the Court on May 10-13, 2016. The Court has
considered the evidence presented at trial, facts stipulated to by the parties, the
arguments of counsel, and the controlling legal authority. The Court has ascertained
the credibility of each Witness and evaluated the probative value of all relevant
l Subsequent to the institution of this suit, Section 145 Was amended to require suits instituted
thereunder to be filed in the District Court for the Eastern District of Virginia. See 35 U.S.C. § 145
(2016).
l
evidence admitted at trial. Based upon the foregoing, the Court makes the following
findings of fact and conclusions of law.
I. BACKGROUND
A. Procedural History
The factual and procedural history of this case is set forth in detail in two prior
rulings by this Court, SD3, LLC v. Dudas, 952 F. Supp. 2d 97 (D.D.C. 2013) and
SD3, LLC v. Rea, 71 F. Supp. 3d 189 (D.D.C. 2014). Only limited factual and
procedural information is therefore given here.
SD3 filed U.S. Patent Application Serial No. 10/10_(),211 (“‘211 application”)
on March 13, 2002. That application claims priority to U.S. Provisional Application
60/275,583 filed on March 13, 2001. At issue in this proceeding are claims 1, 22-24
and 30 of the ‘le application, Which recite:
l. A machine compromising:
an operative structure adapted to perform a task, Where the operative
structure includes a mechanical cutting tool adapted to move in at least
one motion; and
a safety system adapted to detect the occurrence of an unsafe
condition between a person and the cutting tool, Where the safety
system includes a detection subsystem adapted to detect the unsafe
condition, and a reaction subsystem adapted to mitigate the unsafe
condition
Where the reaction subsystem includes a brake mechanism adapted
to stop at least one motion of the cutting tool Within 10 milliseconds
after detection of the unsafe condition.
22. The machine of claim l Where the brake mechanism is adapted to
stop at least one motion of the cutting tool Within 7 milliseconds after
detection of the unsafe condition.
23. The machine of claim l Where the brake mechanism is adapted to
stop at least one motion of the cutting tool Within 5 milliseconds after
detection of the unsafe condition.
24. The machine of claim l Where the mechanical cutting tool is
adapted to rotate and Where the brake mechanism is adapted to stop that
rotation. `
30. The machine of claim l Where the brake mechanism is adapted to
stop at least one motion of the cutting tool in less than 5 milliseconds
after detection of the unsafe condition.
The BPAI affirmed a rejection of claims l and 22-24 under 35 U.S.C. § lOZ(b)
as being anticipated by U.S. Patent No. 3,858,095 issued December 31, 1974, to
Wolfgang Friemann and Josef Proschka (“Friemann patent”). The Friemann patent
claims in pertinent part:
l. A protective device for use in cutting machines having a moving
cutting member compromising:
safety circuit means, responsive to touching of the cutting member
by an operator, for generating an output signal; and
braking means electrically connected to said safety circuit means
for substantially instantaneously stopping the cutting member in
response to said generated output signal of said safety circuit
means.
2. The protective device of claim l Wherein said cutting member
compromises a band cutter having a drive motor; and said safety
circuit means compromises a bridge circuit balanced during normal
operation and When unbalanced by the operator touching the band
cutter provides an output signal by Which full braking of said band
cutter is triggered, Wherein said band cutter is electrically insulated
from the rest of the cutting machine and is connected as capacitance
in said bridge circuit.
The BPAI also affirmed the rejection of claim 30 under 35 U.S.C. § 103(a) as being
obvious in light of the Friemann patent.
In response, SD3 instituted the current action under 35 U.S.C. § 145, alleging
that the PTO’s rejections should be reversed because the Friemann patent fails to
enable one skilled in the art to construct a band cutter capable of stopping its blade
Within 5ms or 10ms Without undue experimentation Therefore, according to SD3,
the Friemann patent could not anticipate or make obvious SD3 ’s claimed invention.
III. RELEVANT LEGAL AUTHORITY
A. Enablement
A patent application Will be rejected for anticipation under 35 U.S.C. § 102(b)
(2006)2 if “the invention Was patented or described in a printed publication in this or
a foreign country . . . more than one year prior to the date of the application for patent
in the United States.” “A prior art reference can only anticipate a claim if it discloses
all the claimed limitations ‘arranged or combined in the same Was as in the claim.”’
Kennametal, Inc. v. lngersoll Cutting T001C0., 780 F.3d 1376, 1381 (Fed. Cir. 2015)
(quoting Wm. Wrz`gley Jr. CO. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361
2 Congress amended Section 102 in the America Invents Act, Pub. L. 112-29, Sec. 3, 125 Stat.
284 (Sept. 16, 2011). The amendment, however, Was not retroactive, and because the ‘211 patent
Was filed before the Act’s effective date, the prior version of the statute applies here.
4
(Fed. Cir. 2012)). “However, a reference can anticipate a claim even if it does not
expressly spell out all the limitations arranged or combined as in the claim, if a
person of skill in the art, reading the reference, Would at once envisage the claimed
arrangement or combination.” Id. (internal punctuation omitted) (internal quotation
marks omitted) (quoting 111 re Petering, 301 F.2d 676, 681 (1962)).
To be anticipatory, prior art must be enabling. “A prior art reference cannot
anticipate a claimed invention ‘if the allegedly anticipatory disclosure . . . [is] not
enabled.”’ ln re Antor Medz`a Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012) (internal
quotation marks omitted) (quoting Amgen Inc. v. Hoechst Marion Roussel, Inc. , 314
F.3d 1313, 1354 (Fed. Cir. 2003)). Claimed and unclaimed materials in a patent are
presumptively enabled. In re Antor Mea’ia Corp., 698 F.3d 1282, 1287 (Fed. Cir.
2012). Therefore, the burden of proof is on the party challenging the patent as
nonenabled to rebut the presumption of enablement by a preponderance of the
evidence. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). If the challenging party
succeeds in rebutting the presumption of enablement, it falls to the opposing party
to produce evidence.sufficient to rebut the challenging party’s contention. Id. If the
opposing party succeeds in doing so, the ultimate burden then rests With the
challenging party. Id.
“Enablement requires that ‘the prior art reference must teach one of ordinary
skill in the art to make or carry out the claimed invention Without undue
experimentation.”’ Elan Pharms., lnc. v. May Founa’., 346 F.3d 1051, 1054 (Fed.
Cir. 2003) (quoting Mnnesota Mining & Mfg. Co. v. Chemique, lnc., 303 F.3d 1294,
1301 (Fed. Cir 2002)). “Undue experimentation” is determined by evaluating eight
factors:
(l) the quantity of experimentation;
(2) the amount of direction or guidance present;
(3) the presence or absence of Working examples;
(4) the nature of the invention;
(5) the state of the prior art;
(6) the relative skill of those in the art;
(7) the predictability or unpredictability of the art; and
(8) the breadth of the claims
Impax Labs., Inc. v. Aventice Pharms., Inc., 545 F.3d 1312, 1314-15 (Fed. Cir.
2003) (citing In re Wana's, 858 F.Zd 731, 737 (Fed. Cir. 1988)). Enablement is a
“question of law based upon underlying factual findings.” Id. at 1315. Whether the
Friemann patent is sufficiently enabling “must be considered together With the
knowledge of one of ordinary skill in the pertinent art” on the date SD3 filed its
application. ln re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (internal quotation
marks omitted) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). Thus, for
present purposes, the question is whether Friemann enables one of ordinary skill in
the art in 2001 to construct his band cutting machine without undue experimentation
B. Obviousness
A patent application will be rejected for obviousness where “the differences
between the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains.” 35 U.S.C. § 103(a) (2006). Obviousness is a legal conclusion underpinned
by “factual questions relating to the scope and content of the prior art, the differences
between the prior art and the claimed invention, the level of ordinary skill in the art,
and any relevant secondary considerations such as commercial success, long-felt
need, and the failure of others.”3 PharmaStem Theapeutz`cs, Inc. v. ViaCell, lnc., 419
F.3d 1342, 1359 (Fed. Cir. 2007).
But to render a claimed invention obvious, the prior art must allow or enable
one skilled in the art to create the claimed invention. See In re Kumar, 418 F.3d
1361, 1368 (Fed. Cir. 2005) (citing Motorola, Inc. v. Interdz`gi,tal Tech. Corp., 121
F.3d 1461, 1471 (Fed. Cir. 1997)); cf. KSR ]nt’l v. Teleflex Inc., 550'U.S. 398, 421
3 Referred to as the Graham factors, these considerations are`derived from the Supreme Court’s
decision in Gmham v. John Deere Co., 383 U.S. l, 17_18 (1966). It is the rule in the Federal
Circuit that district courts evaluating a claim of obviousness engage in the inquiry outlined in
Graham. Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed. Cir. 200).
7
(2007) (“lf [an obvious combination of elements] leads to the anticipated success, it
is likely the product not of innovation but of ordinary skill and common sense.”).
The prior art itself need not be enabled, since even “a non-enabling reference may
qualify as prior art` for the purpose of determining obviousness, and even an
inoperative device is prior art for all that it teaches.” ABT Sys. LLC v. Emerson Elec.
C0., 797 F.3d 1350, 1360 n.2 (Fed. Cir. 2015) (internal punctuation omitted)
(intemal quotation marks omitted) (quoting Symbol Tech., lnc. v. Optz`con, Inc., 935
F.2d 1569, 1578 (F ed Cir. 1991) and Beckman Instruments, Inc. v. LKB Produkter
AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)).
IV. DISCUSSION
Although the BPAI provided two distinct grounds for rejecting SD3 ’s claims,
the dispute as to both grounds largely centers on a single determination: Whether
Friemann’s patent enables one skilled in the art in` 2001 to build Friemann’s band
cutter Without undue experimentation Unsurprisingly, the parties have largely_if
not eXcluSively_focused on resolving that determination in their respective favor.
Accordingly, SD3 has adduced evidence tending to demonstrate the Friemann band
cutter could not be constructed by one skilled in the art in 2001 Without undue
experimentation Conversely, the PTO has adduced evidence tending to show a
number of methods and components available to one skilled in the art in 2001 that
Would enable the building of Friemann’s band cutter.
The Court addresses the parties’ respective evidence and arguments for each
of SD3’s asserted grounds for nonenablement.
A. Ground One
The Friemann patent issued December 31, 1974 and is prior art to the ‘211
application. See PXl .4 The Friemann patent explains that “in the case of band cutter
machines used in the textile industry for cutting out garment blanks, a large number
of accidents, some very serious, have occurred as a consequence of the operator
touching the moving band cutter.” Id. at col. l, ll. lO-l4. To address this problem,
the Friemann patent discloses a band cutting machine provided With a “protective
circuit arrangement suitable for a motor driven band cutter and Which immediately
stops the band cutter When it is touched."’ Ia’. at col. l, ll. 45-47.
The Friemann patent states that “[e]xperiments have shown that With a
protective circuit arrangement in accordance With the invention it is possible for a
band cutter to be stopped in about l/200th of a second, so at the usual speed of
rotation of the band cutter of 14 meters per second the run-on distance amounts to
3-5 cm.” Id. at col.2, ll. 15-20. One two-hundredth of a second is 5ms. The Friemann
patent also claims to stop the blade in lOms. Id. at col. 4, l. 6. SD3 claims that
4 Citations to trial exhibits shall appear “PX_” Where “PX” denotes plaintiff s exhibit and the
following number denotes the exhibit number itself. Conversely, citations to the PTO’s trial
exhibits shall appear “DX_.”
9
stopping times in these ranges cannot be obtained by one of ordinary Skill in the art
using the Friemann patent without undue experimentation
The circuit shown in Figure 1 below depicts the circuit design utilized by the
Friemann patent to detect contact between a person and the blade:
PXl. When contact between a person and the blade is detected, the circuit
shown in Figure l energizes the relay depicted as Rl. A relay is an electromagnetic
or electromechanical switch used to make or break and electrical connection. TT.
5/10/2016 A.M. at 58:25 to 59:3.5
5 Citation to the trial transcript shall appear “TT. [Date] [A.M. or P.M.]” followed by the page and
line pin citation.
10
The Friemann patent discloses the use of motor braking in conjunction With
electromechanical braking to stop the blade. The Friemann patent discloses two
alternate circuit arrangements to accomplish such braking. One circuit is depicted in
Figures 3 and 4, and the other in Figures 5 and 6. The Friemann patent does not
disclose any other circuit arrangements to control or initiate braking.
1 . Emboa’iment and Disclosed in Figures 3 and 4
Figures 3 and 4 from the Friemann patent are-reproduced beloW:
PXl. The Figures 3 and 4 depict relay h2 being energized When relay Rl closes
contact pair R11 - ng. PXl at col. 3, ll. 55-56. When energized, relay h2 opens
contact to h21 Which then de-energizes motor relay cl cutting off power to the motor.
Id. at col. 3, ll. 56-59.
ll
The Friemann patent identifies relay cl as connecting the three-phase
electrical power to the motor by way of contact clm. Id. at col. 3, ll. 48-50. Contact
clm. must therefore be of sufficient size to supply current to the motor.
Relay h2 also closes contact h22 when energized. ld. at col. 3, ll. 59-60.
Closing contacts h22 energizes the relay 02 as depicted in Figure 3 above. Id. at col.
3, l. l60. When energized, relay 02 closes contact 021 as depicted in Figure 4 above
to initiate motor braking and electromechanical braking. Contact c21 must be of a
size sufficient to supply current to the motor for motor braking and to the
electromechanical brake for additional braking.
Thus, for Figures 3 and 4, the Friemann patent contemplates the following
sequence when a user’s flesh makes contact with the cutting blade: first, contact pair
Rl 1 - Rlz; second, contact h21 opens and contact h22 closes; third, contact clm closes
and contact cll opens; fourth, contact c21 closes.
Relays require time to open and close. SD3 introduced evidence suggesting
relays require between 3ms and 25ms to close and between st and 25ms to open.
See PX3()5. SD3 also introduced evidence showing closing and opening times of
3ms and 5ms respectively for “subminiature” signal relays. PX306. Dr. Stephen
Gass, who is both one of the listed inventors of SD3 ’s claims as well as an expert in
the field, testified that relay Rl, if it is a typical relay, will switch in between 3 and
5ms. TT. 5/10/2016 A.M. at 70:19-20. The same is true for relay h2. However,
12
because relays cl and 02 provide power to the motor, their opening and closing times
will typically be longer. See PX3 03. The PTO’s expert, Dr. Charles Landy,6 testified
at deposition that “a contactor would work in a system as disclosed by Friemann” in
“1(), 15 milliseconds.” Deposition of Dr. Charles Landy, May 21, 2014, at 131:12-
16. Lastly, because Friemann teaches direct current (“DC”) injection braking, each
relay in the sequence must perform its function_that is open or close_before the
next relay can safely begin its function.l
Thus, according to SD3, a formula for determining the amount of time it
would take for the embodiment contained in Figures 3 and 4 to begin motor and
electromechanical braking is:
Tr1 + Thz + Tcl + Tcz = Tlniriare making
Where T is the amount of time it would take the respective relay to open or close.
Taking SD3’s relay opening and closing time estimates at face value, the formula
suggests that the time it would take Friemann’s band cutter to begin braking to be
between 18ms and ZOms.7
6 Dr. Landy was an expert hired by the PTO. Tragically, Dr. Landy passed away during the
pendency of this action. He held a Ph.D. in electrical engineering from the University of
Witwatersrand in Johannesburg, South Africa. Testimony from Dr. Landy’s depositions were
admitted into evidence at trial. TT. 5/12/2016 P.M. at 98:16-21.
7 st (Rl) + 2ms (h2) +6ms (cl) +8ms (02)
13
In response, the PTO contends that SD3 overestimates the amount of time it
Would take the relays to close because SD3 fails to take into account overeXcitation,
Which entails the application of current in excess of the normal operating current. In
response, Dr. Gass testified that While overexcitation may increase the speed at
Which a relay closes, it cannot increase the speed at Which a relay opens, because the
opening of a relay relies not on the building up of a magnetic field, but upon a
magnetic lield’s decay. TT. 5/10/2016 A.M. at 83:3-14. The PTO did not dispute
that assertion. Nor did the PTO provide evidence detailing the reduction in closing
times one Would expect from an over-excited relay. HoWever, SD3 contends that
even accepting overexcitation could decrease closing time by a third, it Would still
require the Friemann band cutter, as depicted in Figures 3 and 4, l§ms to being
braking.8 Likewise, if overexcitation halved the closing times, it Would still require
lst to begin motor braking.9
Accordingly, SD3 argues Friemann, as disclosed in Figures 3 and 4, could not
enable one of ordinary skill in the art to stop the band saw blade in 5ms or lOms.
Beyond its reliance on overexcitation, the PTO offers no other method for
permitting Friemann’s embodiment as disclosed in Figures 3 and 4 to being braking
Within 5ms or lOms.
8 l.5ms (Rl) + l.5ms (h2) +6ms (cl) +6ms (cZ)
9 lms (Rl) + lms (h2) +6ms (cl) +4ms (c2)
14
Detected 24 diacritics
2. Embodiment as Disclosea’ in Figures 5 and 6
Friemann provides an alternative circuit configuration for his band cutting
machine as demonstrated by Figures 5 and 6 below:
.- zl_x
:Z§:;T(HH driftde
HP ' 111 j mg mi 315_
PXl. Figures 5 and 6 depict relay Rl being energized when contact between a person
and the band blade is detected. When energized, Rl closes contact pair Rll _ Rlz
and Rl5 ~ Rl6, and opens contact pair Rl3 - Rl4. See PXl, col. 4, ll. 40-42. The
closing of contact pairs Rll - Rlz and Rl5 _ Rl6 actuates an electronic reversing
switch_denoted as “15” in Figure 6_to initiate motor braking, and simultaneously
close relay c2 to energize electromechanical braking. Id. at col. 4, ll. 45-53.
The Friemann patent identifies electronic reversing switch 15 as being of the
type “Rewimat 2000.” Id. at col. 4, l. 48. SD3 introduced evidence that the Rewimat
2000 is a type of reversing switch known as a triode for alternating current
15
(“TRIAC”) solid state relay. See PX314. Dr. Gass testified that, at minimum, a relay
like the Rewimat 2000 at 60 Hz would require 5 .5ms to switch from three-phase
alternating current (“AC”) to direct current because at that frequency 5.5ms is the
shortest possible time in which voltage on all three phases to cross to zero. TT.
5/10/2016 A.M. at 90:10-22.
lt is extremely important that, prior to switching from AC, the three phases
reach zero voltage, elsewise a short circuit will result with possibly grave results.
TT. 5/10/2016 A.M. at 93:4-7; TT. 5/11/2016 P.M. at 60:8. As a result SD3
introduced evidence demonstrating that manufacturers typically include an interlock
time in their electronic switches in order to avoid short circuits. PX302; TT.
5/10/2016 A.M. at 92:21-93:10. One of the PTO’s experts, Mr. Michael Gilliland10
also testified that reversing switches include interlock times. TT. 5/l l/2016 P.M. at
59119_60:11. SD3 introduced evidence demonstrating that in commercially
available TRIAC-based solid state relays, the interlock time is between 50ms and
lOOmS. See PX302; TT. 5/10/2016 A.M. at 94:15-17.
Thus, according to SD3, Friemann’s band cutter as disclosed in Figures 5 and
6 could not initiate braking within 5ms or lOms.
10 Mr. Gililland holds a bachelor’s degree in electrical engineering from Louisiana Tech
University; he has extensive experience as a safety engineer for power tool companies.
l6
Contrary to SD3’s assertions, the PTO’s experts testified that a person of
ordinary skill in the art would use electronic switches such as silicon controlled
rectifiers (“SCR”) to initiate braking. E.g., TT. 5/11/2016 P.M. at 61 :9-62:7. One of
the PTO’s experts, Dr. Bruno Lequesnell stated that SCRS were invented in the
l950s, and widely used in the 1970s and 19805, but were largely displaced by power
transistors in 2001. TX300 at 166; TT. 5/12/2016 P.M. at 37:24-38:8. Dr. Lequesne
went on to testify that in 2001 one of ordinary skill in the art would have used power
transistors, rather than SCRs or electromechanical relays. TT. 5/12/2016 P.M. at
37:24-38:5. These SCRS and power transistors can switch power on the order of
microseconds.
SD3 did not contest the PTO’s assertion that SCRs could be designed to
switch power off in microseconds. SD3 did contest the assertion that such an SCR
could be purchased commercially; SD3 also claimed that the design and construction
of such an SCR would be “a new invention.” TT. 5/10/2016 A.M. at 96:20-23. Mr.
Gililland echoed this point. When asked whether the Friemann specification
contained the requisite circuitry to operate an SCR that could switch power off in
microseconds, Mr. Gililland responded: “[n]o, you have to have more circuitry than
that.” TT. 5/11/2016 P.M. at 9l:l7. When asked whether an SCR that would meet
ll Dr. Lequesne holds a PhD in electrical engineering from the Missouri University of Science and
Technology. He is a specialist in electric machines, actuators and, and electromechanical systems,
including the design of electric motors.
l7
the requirements to implement the Friemann patent Was available commercially in
2001, Mr. Gililland responded: “I could probably find some control circuits that
could be adapted to do that . . . .” Id. at 92:4-6. Accordingly, SD3 asserts one of
ordinary skill in the art could not design such a circuit Without undue
experimentation, and, therefore, could not build Friemann’s band cutting machine
Without undue experimentation
B. Ground TWo
SD3’s second ground for nonenablement is that the motor and
electromechanical braking as disclosed in the Friemann patent cannot stop the blade
in the time frames specified in SD3’s claims.12
SD3 focused its arguments here on the amount of inertia contained in a band
cutting machine like Friemann’s, and using various estimates of pulley inertia,
pulley ration, motor inertia, motor torque, and so forth, SD3 calculated the time it
Would take to stop the blade. The basic formula for that calculation is: stopping time
(t) = inertia (J) X angular Velocity (u)) + torque (T). As applied to this case, the
equation is:
12 SD3 has four time-specific claims at issue. Claims l and 24 require the blade to stop “Within
10 milliseconds.” Claim 22 requires the blade to stop Within 7 milliseconds. Claim 23 requires the
blade to stop Within 5 milliseconds. Claim 30 requires the blade to stop “in less than 5
milliseconds.”
18
rollers and roller
blade
- ‘ - + .' . x 'm lular
belt motor (bt'»h pl.l-I.Icy mcrtla ‘, 15 .-1 .
motor , . 11161'|.1¢1 \c ocl y
. . + pulley x angular +
m°"““ inertia velocity gear ratio
t '..:
motor torq ue
Due to the nature of the above equation, the time required to stop can be
reduced in a number of Ways. For instance, the motor inertia and speed can be
reduced. The same is true for the inertia and speed of the pulleys. Alternatively, the
motor torque can be increased. Torque may also be increased by the addition of
electromechanical braking. Theoretically, any one of these changes or combination
of them, Will lead to faster stopping times. The parties principally dispute What
changes are practically possible Without undue experimentation, and indeed, What
changes are possible within the realm of current knowledge and capability.
]. T he Pulley and Roller Inertia, Blade Inertia, Gear Ratz'o, and Angular
Velocity
The parties disputed the pulley inertia and belt pulley ratio that should be
included in the equation. According to SD3, the Friemann patent speaks to
“industrial” band cutters, and, therefore, the pulleys Would be made of metal_a
material that Would have a higher inertia than materials like plastic. TT. 5/10/2016
P.M. at 2618-13. The PTO disputes that characterization of Friemann, noting that
neither Friemann nor SD3’s claims are limited to “industrial” applications
19
Accordingly, the PTO adduced evidence of a consumer-grade, l/3 horsepower band
saw that had pulleys made of fiberglass PX29; PX30. Dr. Landy, one of the PTO’s
experts, calculated that pulley would have a rotational inertia of .()055 kg-mz. At
trial, SD3 accepted, for the sake of argument, the .0()55 l“ '." I.l =" g ' ili§m ,
l umw g __ _ l\
._ - . z --'! `§.w'
Dlagram 2
PX320 at 38. Diagrams 1-3 and Fig_ure l taken together render the following
approximations for the Mayr brakes: size 3 is the smallest and fastest of the brakes
33
identified. According to the Mayr catalogue, when overexcited it requires st
before applying any braking torque, and another 18ms to apply its full-rated torque
of approximately 6-7 Newton-meters atl 1500 RPM. The size 5 brake when
overexcited requires 4ms before applying any torque, and another 26ms to apply its
full-rated torque of approximately 26 Newton-meters at 1500 RPM. The size 6 brake
when overexcited requires 6ms before applying any braking torque and another
44ms before applying its full-rated torque of approximately 45 Newton-meters at
1500 RPM.
In response to SD3’s argument that these specifications show that the Mayr
family of brakes are not fast enough, Dr. Lequesne testified that there are a number
of ways to make off-the-shelf brakes like the Mayr brakes perform faster. For
instance, he suggested the use of overexcitation to increase the speed at which the
brakes actuate. TT. 5/12/2016 P.M. at 47:8-24. Dr. Gass also testified that
overexcitation was a known way to increase brake engagement speed. 5/10/2016
P.M. at 115:1-4. Similarly, Dr. Landy' stated that overexcitation could increase the
speed at which the Mayr brakes engaged. PXS at 8 n.4. And the Mayr catalogue itself
in fact gives specifications for brake performance when overexcited. Figure 1. Dr.
Gass also agreed that overexcitement could reduce the response time to one forth
nominal response time. TT. 5/ 1 1/2016 A.M. at 56:10-15. He also stated his own tests
showed that the brake’s holding force was increased by around 60-70%. Id. at ll. 3-
34
9. He was able to get the size 6 brake to engage in approximately 5.2ms. See PX3 00.
But he clarified that for his own tests he had to develop a circuit because the Mayr
overexcitation brake controller “wouldn’t do what I wanted to do to fairly test the
maximum possible characteristics of the brake.” Id. at 50:23-51:5. He characterized
the effort to design that circuit “substantial . . . it wasn’t something that you could
buy.” Id.
Based lon Dr. Gass’s experiments, Dr. Lequesne testified that a size 5 Mayr
brake may be able to engage in as fast as “four or even three milliseconds.” TT.
5/12/2016 P.M. at 54:4-11. Dr. Lequesne went on to suggest that the brake response
time could be further improved by keeping the brake cool, as well as lowering the
air gap between the brake and the engagement surface. Id. at 54:17-25-55:11. Mr.
Gililland also testified that customized brakes could be designed to act faster than
the Mayr brakes by, for example, changing the springs, air gap, or windings.
5/l 1/2016 P.M. at 63:l l-64:12.
In addition to the response time, the Mayr brakes do not reach their peak
torque for some time af`ter they engage. Diagram 3, supra, represents that interval as
t1. There was no testimony at trial presented regarding the amount of torque an
overexcited Mayr brake could be expected to produce within l()ms of engaging. In
other words, the was no testimony describing the amount of torque a Mayr size 6
brake would produce within 4.8ms of its 5.2ms engagement time.
35
Additionally, the Mayr brakes must stop themselves before they can begin
aiding in stopping the band saw blade because each brake has its own inertia. TT.
5/11/2016 P.M. at 115:14-18. Thus, the Mr. Gililland testified that although adding
multiple brakes would increase the inertia in the system, “they will still apply
additional stopping force.” ld. at ll. 10-13. Thus, he testified that although each brake
has to account for its own inertia, “if you trigger them all at the same time, then they
will all be applying whatever force they can apply.” Dr. Lequesne similarly testified
that adding more breaks will increase inertia, but will also increase torque. TT.
5/12/2016 P.M. at 58:8. There was no evidence admitted detailing the amount of
inertia the Mayr brakes would add and whether that additional torque would offset
the increased inertia in a lOms timeframe.
4. Transient Torques
The parties also disagree on the role, if any, that transient torques would play
in stopping the motor.
As described by Dr. Landy in his report, induction motors do not always
generate a “steady” amount of torque. PXS at 6. Rather, when “the motor is no longer
operat[ing] in a steady state mode from the time the AC supply is removed and
during the DC dynamic braking.” Id. “In this period the motor operates in a transient
state until it stops because the speed is changing.” During that transient state,
36
according to Dr. Landy, “the induction motor differential equations must be used to
predict DC dynamic braking torque produced and its Variation With time.” Ia’. at 6-
7. According to Dr. Lequesne, “it is Well known that during starting or stopping
induction machines, you Will have an average torque, Which is the same torque that
you Would have in a steady [nontransient] state.” TT. 5/13/2016 P.M. at 4:2-8.
“[Y]ou add to that transient torque, Which are oscillating torques. You add, subtract,
add, subtract, in an oscillating manner.” Id. at ll. 9-11. The oscillations in the
following figure demonstrate the transient torques that existed in the motor
simulated by the Pham paper:
37
Detected 14 diacritics
mm Ww~
¢~¢¢W~ ihwi!w mut
' m s "’~ *“" _
m ’ t °* ’ ” -l'd-
¥E£ m ~» nn adea ~ MMMML nov
Fi,gure 4: quu¢ and Rntor V¢lociiy dm'iBg1hs Dynamic linking
PX 8. The line With the large oscillations is the torque over time simulated by
the motor. PX 8 at 7. The oscillations themselves are What the parties in this matter
have referred to as transient torques. TT. 5/13/2016 P.M. at 7:9-12. An overexcited
motor Will produce oscillations of greater magnitude.
Dr. Lequesne further explained that eventually the oscillations die down and
the torque generated by the motor remains steady. Id. at lO: 6-l l. And indeed due to
their oscillating nature, over time the effect of transient torques is “zero.” ld. at l. 12.
However, according to Dr. Lequesne, if one manages to stop the motor With the first
38
“pulse” of negative transient torque, then the transient torques could help stop a
motor within lOms. ld. at 11112-12:5.
Pointing to the Pham article, Dr. Landy concluded that the peak transient
during DC injection braking could be as much as 6.5 times full-load torque at 7.5ms.
PX16 at l. Dr. Landy Went on to perform a number of simulations in a program
called MATLAB to confirm the role transient torques played in stopping a motor in
the relevant time frame. Landy Dep. 12/16/2016 at 21211-25. Dr. Landy explained
in his declaration, DX29, that he obtained 12 times the full load torque in that
simulation. Landy Dep. 12/16/2015 at 33:18_35:7. Dr. Landy Went on to explain
that the motor he programed into his simulation Was a motor that he “designed.” la’.
at 21:11-25. In other Words, it is a motor that does not exist except in Dr. Landy’s
simulations. In explaining Why he believed his simulation reflected the real-World
performance of the motor, Dr. Landy pointed out that the program he designed and
utilized had been used “many hundreds of times” by companies that manufacture
induction motors. ld. at 23:16-24:21. Thus, he explained: “I am totally confident
that this program produces machines that are viable to Work . . . . So on that basis
and With my design experience, I designed this motor.” Id.
Dr. Lequesne reviewed Dr. Landy’s simulation and testified about it at trial.
TT. 5/12/2016 P.M. at 21:11-22:15; PX35. Dr. Lequesne testified that the motor
specifications used by Dr. Landy Were “reasonable.”
39
During trial, Dr. Gass questioned the reliability of a simulation based on a
nonexistent motor. TT. 5/11/2016 A.M. at 48:7-18. Further, during trial, it was later
disclosed that-though not specifically relevant to the question of transient
torques_the lOms stopping time obtained by Dr. Landy in his simulation was
partially effected through the addition of a brake applying roughly 220 Newton-
meters of torque to the simulated motor. TT. 5/13/2016 A.M. at 14110-15. The
simulation however does not explicitly mention the use of a brake. See PX35.'6
5. Slippage
Lastly, the parties disagree on what role, if any, slippage would play in
stopping the band blade.17
Slippage, according to Mr. Gililland, can occur when the blade itself is
stopped, while the motor, rollers, and pulleys continue to rotate. TT. 5/11/2016 P.M.
at 67:7-9. This can be accomplished by braking the band saw blade directly, rather
than braking the saw’s other moving parts, namely the motors, rollers, and pulleys.
Id. at 67:20-68:25. To support Mr. Gililland’s assertion, the PTO points to an
16 The use of a brake likewise went unmentioned by Dr. Lequesne when he, in great detail,
explained the technical details of Dr. Landy’s simulation. See TT. 5/12/2016 P.M. at 18:1_30:8.
17 SD3’s failure to consider slippage was one of the grounds under which the BPAI affirmed the
denial of SD3’s claims here. PXZOO at A907.
40
Australian band saw_called the “BladeStop”-that applies braking directly to the
band saw blade. TT. 5/10/2016 P.M. at 122:21-123:16.
In response, Dr. Gass testified that there were a number of complications
involved in grabbing a band saw blade directly. Id. at 121118_122:2. He further
explained that grabbing a steel blade is difficult, and to get around that difficulty one
of SD3’s patents uses carbide jaws to “bite into the [band saw blade] to be able to
grab it to then use the energy of the blade to pull those jaws down tighter to then
pinch it in two or sever the blade.” Id. at ll. 14-19. Dr. Gass hirther testified that
based on that technology, the makers of the BladeStop device “spent the next 10
years or so trying to further refine it to get a system that would actually stop quick
enough.” Id. at 123 :8-12.
C. Findings of Fact
By a preponderance of the evidence, the Court makes the following findings
of fact:
l. One of Ora'inar;v Skill in the Art
A person of ordinary skill in the art is an individual with a bachelor’s degree
in engineering, either mechanical or electrical, and who has a few years of
experience designing power tools.
2. SD3 ’s First Claim OfNonenablement
41
SD3’s first claim of nonenablement involved the time it required for the
circuitry disclosed by Figures 2-5 in Friemann’s patent to initiate motor braking once
a user’s flesh came into contact with the band blade.
The Court finds that electromechanical relays require between 3ms and 25ms
to close and between 2ms and 25ms to open. However, relays used to provide power
to an electric motor will typically take longer to open, and, therefore, the Court finds
that relay cl requires around 6ms to close, while relay c2 requires 8ms to open. The
Court also finds that if these relays were overexcited, their closing times would be
reduced, but their opening times would not be affected. The Court finds even if`
overeXcited, these electromechanical relays could not initiate motor braking within
lOms.
With respect to the Friemann patent as disclosed in Figures 5 and 6, the Court
finds that electronic reversing switches, such as the Rewimat 2000, require at least
5.5ms to switch power at 60 Hz. Further, the Court finds that these types of switches
also include interlock delay times to prevent internal short circuits, and those
interlock times are generally between 50ms and lOOms. Therefore, the Court finds
that a band cutter as disclosed in Figures 5 and 6 of` the Friemann patent incorporated
a commercially available electronic reversing switch such as the Rewimat 2000, it
could not begin motor braking within lOms of a user coming into contact with the
band blade.
42
However, the evidence supports the conclusion at as of March 2001, forced
commutation circuits existed, which would permit an electronic reversing switch
such as the Rewimat 2000 to switch power in microseconds. Therefore, a band
cutting machine as disclosed in the Friemann patent that included an electronic
reversing switch along with a forced commutation circuit could begin motor braking
within 10ms of a user coming into contact with the band blade.
The evidence further supports the conclusion that as of March 2001,
alternative means for switching power existed in the form of power transistors.
These transistors can switch power to the motor in microseconds. If a band cutter
based on the Friemann band cutter utilized power transistors rather than
electromechanical relays or electronic reversing switches like the Rewimat 2000, it
could begin motor braking within 10ms of the user’s flesh coming into contact with
the blade. For the purposes of this dispute, power transistors would permit motor
braking to begin instantaneously.
3. SD3 ’s Secona’ Claim of Nonenablement
i. Pulley and Roller lnertia, Blade Inertia, Gear Ratio, and Angular Velocity
A rotational inertia of .0055 kg-m2 for the band cutting machine’s rollers,
though low, is an acceptable estimate for a small band cutting machine.
43
A belt pulley inertia of .0015 l698
F.3d 1282, 1287 (Fed. Cir. 2012). Therefore, the burden rests with SD3 to rebut that
presumption lf that presumption is rebutted, the burden shifts to the PTO to adduce
evidence showing that the Friemann patent is in fact enabling. Ia'. If the PTO does
so, the burden once more rests with SD3 to show that the Friemann patent is not
enabling.
As noted previously, the proper test for determining enablement is whether
one of ordinary skill in the art “could take the description of the invention in the
printed publication and combine it with his own knowledge of the particular art and
48
from this combination be put in possession of the invention on Which the patent is
sought.” In re Sasse, 629 F.Zd 675, 68l (CCPA 1980). To be enabled, no more is
required of prior art than is required by the claims themselves See In re Gleave, 560
F.3d l33l, 1336 (Fed. Cir. 2009). “Undue experimentation” is determined by
evaluating the eight Wcmds, 858 F.Zd at 73 7, factors.
]. F indings as to SD3 ’s First Claim ofNonenablement
In order to prevail on its first ground of nonenablement, SD3 Was required to
show that one of ordinary skill in the art Would be incapable of building a band cutter
based on the Friemann patent that could stop itself Within lOms of a user coming
into contact With the band cutting blade. Speciflc to this particular ground for
nonenablement, SD3 Was required to show that the electronic circuitry associated
With detecting and initiating braking Within lOms of a user’s contact With the blade
could not be built by one of ordinary skill in the art absent undue experimentation
SD3 presented evidence that the relays and circuitry disclosed in the two
embodiments contained in Friemann could not begin braking Within lOms due to
their physical limitations Specifically, for the embodiment as disclosed in Figures 3
and 4 could not begin braking because the relays disclosed in those figures are
electromechanical, and as such, require time to open and close. Furthermore, SD3
presented evidence that one of ordinary skill in the art Would have understood the `
diagrams disclosed by Figures 3 and 4 to disclose the use of electromechanical
49
relays. SD3 also presented evidence that due to the nature of the Friemann patent,
the time required to open or close each respective relay Was cumulative, and that
once added up, that cumulative time exceeded lOms. The Court credits all of SD3’s
evidence here. That evidence is sufficient to rebut the presumption of enablement as
to Figures 3 and 4. Accordingly, the Court looks to any contrary evidence adduced
by the PTO.
In response, the PTO presented evidence demonstrating the response times for
electromechanical relays could be decreased by overexciting the relays. The Court
credited that testimony. However, the PTO did not present evidence showing that
overexcitation could speed the opening of such relays. Moreover, the PTO did not
present convincing evidence regarding the expected increase in response time one
should expect from overexcited relays. Accordingly, the Court finds that the PTO
failed to carry its burden here and the Friemann patent, as disclosed in Figures 3 and
4, is not enabled, and, therefore cannot anticipate SD3’s claims. The Court makes
no Wands findings here, because application of the Wana’s factors presupposes some
evidence in the record indicating experimentation is required to practice the
invention. See Alcon. Research Ltd. v. Barr Labs., Inc., 745 F.3d llSO, 1189 (Fed.
Cir. 2014). Here, the PTO has failed to carry its burden indicating any
experimentation Would permit the practicing of the Friemann patent as disclosed in
Figures 3 and 4. Accordingly, the Court need not address Whether such
50
experimentation would be “undue.” Futile experimentation is undue by its very
nature.
SD3 also presented evidence that the time required to initiate braking would
exceed lOms in the embodiment disclosed in Figures 5 and 6 of the Friemann patent.
Specifically, SD3 provided evidence showing that electronic reversal switches such
as the Rewimat 2000 would require more than 10ms to initiate motor braking from
the time a user contacted the band blade.
In response, the PTO established that by use of a forced commutation circuit,
the Friemann patent could begin braking in microseconds. Additionally, the PTO
established that as of March 2001, power transistors that would allow braking to
begin in microseconds also existed. SD3 did not present contrary evidence. Rather,
it claimed one of ordinary skill in the art would require undue experimentation to
enable the Friemann patent as disclosed in Figures 5 and 6. Whether that is true
depends on the Wana's factors.
i. The Quantity of Experimentation
The PTO’s expert, Mr. Gililland, testified that no such circuit is likely
commercially available. A forced commutation circuit would therefore have to be
designed. Dr. Gass testified that it is “non-trivial to design a motor control circuit.”
51
TT. 5/10/2016 A.M. at 96:10. Dr. Gass further claimed “[i]t would involve a
significant amount of work, it’s not a simple thing.” Ia'. at 96:20-23.
No testimony or evidence was received regarding the amount of
experimentation that would be required to incorporate a power transistor into the
Friemann patent.
The Court finds at least some experimentation would be necessary to design
and incorporate a commutation circuit. However, because there is no evidence in the
record regarding the amount of experimentation that would be necessary to
incorporate a power transistor, the Court finds this factor weighs in favor of the PTO,
because it was SD3’s ultimate burden to show the use of such transistors would
require undue experimentation
ii. Amount of Direction or Guidance
The Court finds this factor weighs in favor of SD3. The Friemann patent
claims 10ms and even perhaps 5ms stopping times are possible utilizing the circuity
disclosed in his patent. SD3 has demonstrated, with respect to the embodiment in
Figures 3 and 4 that, the Friemann band cutting machine cannot likely achieve such
stopping times. Moreover, although Friemann does teach the use of an electronic
reversing Switch, it does not mention the need for a forced commutation circuit, nor
is such a circuit contained in Friemann’s diagrams. Accordingly, Friemann offers no
52
guidance on how to incorporate a forced commutation circuit. Friemann likewise
fails to provide any direction on the incorporation of power transistors.
iii. Presence or Absence of Working Examples
The PTO did not introduce into evidence any example of a circuit able to
initiate motor braking and electromechanical braking within lOms. The only circuits
in evidence to control and initiate motor braking and electromechanical braking are
the circuits shown in the Friemann patent, and as explained, those circuits do not
allow braking of any kind to begin within lOms. This factor favors SD3.
iv. Nature of the Invention
SD3 ’s invention satisfies a long-felt but previously unsatisfied need for safer
cutting machines. SD3 introduced evidence showing that its SawStop band saws
have saved the fingers of thousands of persons who had accidents while working
with saws. SD3 has in turn experienced commercial success from its saws. Indeed,
SD3’s invention led to the Advance Notice of proposed Rulemaking from the U.S.
Consumer Product Safety Commission regarding a potential standard requiring all
table saws to incorporate some kind of active injury mitigation technology. PX108.
Taken together, these facts demonstrate that, as of March 2001, there existed
a significant incentive to design a cutting tool able to stop the blade within lOms.
Despite the existence of that incentive and aside from the Friemann patent and its
53
limited fanfare in the l970s, there is no other evidence demonstrating the physical
existence of a cutting tool that can stop itself within lOms of its blade coming into
contact with a user’s flesh.
v. State of the Prior Art
The PTO relied on three prior art patents at trial: U.S. Patent No. 3,785,230 to
Lokey, U.S. Patent No. 4,117,752 to Yoneda, and U.S. Patent No. 5,272,946 to
McCullough. DX202; DX204; DX205. There is no evidence, however, that these
patents disclose a circuit capable of initiating motor or electromechanical braking
within lOms. To the contrary, the Lokey patent discloses a schematic with an
electronic relay like Friemann’s electronic reversing switch 15. As stated, such
switches include interlock times ranging from 50ms to lO()ms. The Yoneda and
McCullough patents disclose circuits with relays like those shown in Figures 3 and
4 of the Friemann patent. The fact that the three prior art patents cited by the PTO
all include relays or an electric relay like those disclosed in Friemann indicates that
even inventors were not aware of the need to utilize fast acting components like low
inertia motors. The prior art does not include the use of power transistors or a
commutated electronic switch. This factor favors SD3.
54
vi. Relative Skill of Those in the Art
The Court has previously concluded that the evidence supports the conclusion
that one of ordinary skill in the art would possess a mechanical engineering or
electrical engineering degree and would have a number of years’ experience
designing and building power tools.
In light of the aim of Friemann’s invention, one of ordinary skill in the art
would recognize the need to use faster acting electronic components rather than
simply rely on what, in March 2001, would have been decades-old technical
specifications
With respect to commutation circuits, the PTO’s expert Dr. Lequesne testified
that as an undergraduate electrical engineering student he was taught how to design
and use forced commutation circuits. By contrast, Dr. Gass testified that
commutation circuits were not well known to the ordinary artisan.
On balance, the Court finds that one of ordinary skill in the art would be aware
of and would know how to design and implement a forced commutation circuit. That
design and implementation process would require at least some experimentation
More importantly, Dr. Lequesne testified that one of ordinary skill in the art
in March 2001 would have used power transistors as a matter of course. SD3
presented no evidence to the contrary.
55
The Court finds that this factor heavily favors the PTO.
vii. Breadth of the Claims18
The breadth of SD3 ’s claims here are broad. There is no limitation on the size
or type of “cutting tool” covered by SD3’s claims. Neither is there a limitation
regarding the expected use of SD3’s claimed invention; it covers all “cutting tools”
from industrial to hobbyist applications Thus, this factor favors the PTO.
The Court finds that the factors on the Whole favor the PTO as to SD3’s first
claim for nonenablement. Particularly salient in the Court’s mind is the dearth of
evidence regarding the incorporation of power transistors into Friemann’s disclosed
circuitry. SD3 bears the burden of showing the incorporation of such transistors into
Friemann’s disclosure Would require undue experimentation There, however, is no
evidence in the record Showing that to be the case. The Court therefore rejects SD3 ’s
first claim of nonenablement.
2. SD3 ’s Second Claim of Nonenablement
As discussed previously, SD3’s second ground of nonenablement is that the
Friemann motor braking and electromechanical braking cannot stop the blade in the
18 The parties did not address the predictability or unpredictability of the art at trial.
56
time periods recited in SD3’s claims. The claims at issue are addressed separately
because the claims each contain different time limitations.
i. Claims l and 24: 10 Milliseconds
SD3’s Claims l and 24 recite a machine With a brake mechanism adapted to
stop “at least one motion of the cutting tool Within 10 milliseconds after detection of
the unsafe condition.” PXlOl.
Dr. Gass testified that he calculated the torque required to stop the blade in
Friemann’s band cutter in lOms, and a motor and an electromechanical brake as
disclosed in the Friemann patent cannot provide the required torque. Dr. Turcic, one
of SD3 ’s experts, also testified that he too calculated that the required torque could
not be provided by an electromechanical brake and motor as disclosed in Friemann.
Furthermore, one of the PTO’s own experts, Dr. Landy, testified that he doubted a
motor could stop itself in lOms. Furthermore, SD3 presented evidence that the FL-
1838 motor, a specifically designed high torque to inertia motor, Would not produce
enough torque to stop a band cutter based on Friemann, even Where that band cutter
utilized undersized rollers and pulleys. In addition, SD3 showed that
electromechanical brakes such as the Mayr family of brakes require at least some
amount of time to initiate braking, and an additional amount of time before they
begin applying their hally rated torque. SD3 demonstrated that none of those brakes
57
alone could produce the required additional torque to stop the Friemann band cutter
in lOms, and would require between 22 and 4 brakes, depending on their size.
The evidence submitted by SD3 at trial was sufficient to rebut Friemann’s
presumption of enablement Accordingly, the burden fell to the PTO to rebut SD3’s
assertions
As noted above, the PTO relied on the overexcitation of the FL-1838 motor
to produce three times breakdown torque; it relied on using multiple brakes; it relied
on the inclusion of transient torques in the calculations; and it relied on the potential
to brake the band blade directly to induce slippage between the band blade and the
rollers.
In response, SD3 presented evidence showing that the FL-1838 motor cannot
produce three times breakdown torque, and therefore it would require an ordinary
artisan undue experimentation to design and build a motor capable of producing a
sufficient amount of torque; it demonstrated that transient torques would not play an
appreciable role in stopping times; and it established that additional brakes increase
the overall inertia in the system, and, therefore.would not necessarily lead to faster
stopping times. Finally, regarding slippage, SD3 argued it would require an ordinary
artisan undue experimentation to induce slippage in the Friemann band cutting
machine. Whether an ordinary artisan could design and build la motor capable of
58
producing the required torque and whether an ordinary artisan could adapt the
Friemann band cutting machine to directly grip the blade and induce slippage
requires an analysis of the Wands factors.]9
a. Quantity of Experimentation
Dr. Lequesne testified that ordinary electrical engineers are not familiar with
electric motor design, and ordinary mechanical engineers design motors “at their
own peril.” TT. 5/13/2016 P.M. at 54:17-20. Dr. Turcic testified that a person of
ordinary skill in the art would not have experience designing custom electric motors.
TT. 5/l l/2016 P.M. at 11:18-20. A preponderance of the evidence suggests that a
significant amount of experimentation would be required for one of ordinary skill in
the art in March 2001 to design and build a motor capable of the stopping times
required by the Friemann patent.
Regarding slippage, Dr. Gass testified that there were a number of
complications involved in fashioning a mechanism to break a band saw blade
directly. TT. 5/11/2016 P.M. at 121:18~122:2, l4-l9. Dr. Gass further testified that
the only band saw capable of directly grabbing the band blade as a means of braking
required lO years of development Id. at 123:8-12.
19 The Court does not address the PTO’s claim that multiple brakes could be used to decrease
stopping times because the PTO failed to show those brakes could overcome their own inertia
within lOms.
59
The Court finds that this factor heavily favors SD3.
b. Amount of Direction or Guidance
The Friemann patent teaches using a “driver motor” and specifically a “three-
phase motor.” PXl, col. l, ll. 60-61; col. 3 ll. 49-50; col, 4 l. 34; and col. 6 l. 4. The
Friemann patent does not teach the need for a specifically designed low inertia motor
or a high torque motor, Indeed, the Friemann patent fails to mention the motor’s
torque to inertia ratio as a relevant factor at all', and in doing so implies a run-of-the-
mill motor Will suffice. Even assuming the Friemann patent would disclose to one
of ordinary skill in the art the need to design a custom motor, it provides no guidance
Whatsoever regarding how such a motor should be constructed, nor Would one
skilled in the art possess the requisite knowledge.
Assuming that the Friemann patent teaches braking directly applied to the
band blade,20 it provides no guidance on how one Would go about designing and
implementing a mechanism to do so.
This factor Weighs heavily in SD3’s favor.
20 Mr. Gililland testified that claim 6 of the Friemann patent teaches applying an electromechanical
brake directly to the blade. TT. 5/1 1/2016 P.M. at 65118-66:19. The Court makes no explicit
finding on Whether the Friemann patent actually teaches such a braking technique, but for the sake
of argument assumes that it does.
60
c. Presence or Absence of Working Examples
A German newspaper from 1973 shows two pictures of Friemann’s prototype
band cutter. PXl7. Dr. Gass testified that despite an exhaustive search, SD3 Was
unable to locate any prototype or band cutter based on Friemann’s patent.
Further, no evidence Was admitted establishing the existence of an induction
motor and brake combination capable of producing sufficient torque to stop a band
cutter based on Friemann’s design in 10ms. And finally, the record is devoid of
evidence touching upon the existence of a band cutting machine in March 2001
capable of stopping in lOms by directly grabbing the band blade.
This factor strongly favors SD3.
d. Nature of the Invention
This factor strongly favors SD3 for the reasons expressed previously in
connection With SD3’s first ground of nonenablement.
e. State of the Prior Art
As discussed, the PTO relied on U.S. Patent Nos. 3,785,230 (Lokey),
4,117,752 (Yoneda), and 5,272,946 (McCullough) as prior art. Assuming that these
patents are indeed prior art to SD3 ’s claims, they fail to disclose the need to minimize
inertia and maximize torque in order to stop a motor or blade quickly. None of these
61
prior art references disclose how to design and build a motor capable of producing
the required torque, nor do they even disclose the need for such a motor.
And while these prior art reference disclose the concept of directly braking a
blade_and in the case of McCullough loosening the tension on the band blade to
induce slippage_none of these patents address directly braking the blade with an
electromechanical brake. Their applicability to one attempting to utilize Friemann is
therefore dubious.
This factor favors SD3.
f. Relative Skill of Those in the Art
Dr. Gass testified that one of ordinary skill in the art would know “very little
about motor design.?’ TT. 5/10/2016 A.M. at 44:14. Dr. Lequesne also testified that
ordinary mechanical engineers and ordinary electrical engineers do not know much
about the design of electric motors. TT. 5/13/2016 P.M. at 32:4-13. The record also
supports the conclusion that one of ordinary skill in the art would have no experience
stopping the blade of a power tool fast enough to mitigate injury. TT. 5/10/2016
P.M. at 54:3-16.
Because the records supports the conclusion that a person of ordinary skill in
the art would have little or no experience designing and building electric motors, and
additionally, because the record supports the conclusion that a person of ordinary
62
skill in the art Would have little or no experience attempting to directly brake a band
blade as a safety mechanism, this factor strongly favors SD3.
g. Predictability of the Art
As stated, the parties did not focus on this factor during trial. It therefore does
not bear on this case.
h. Wands Finding
Based upon the foregoing, the Court concludes that one of ordinary skill in
the art could not build a motor capable of producing sufficient torque to stop the
blade of a band cutter based on the Friemann patent Within lOms Without engaging
in undue experimentation, assuming such a motor can be designed
The Court also concludes that one of ordinary skill in the art Would not be able
to design and implement a mechanism to grab the band blade of the Friemann band
cutter and stop the blade Within lOms by utilizing electromechanical brakes without
first engaging in undue experimentation, assuming that such a feat is even possible.
ln light of the Court’s previous conclusion that the addition of
electromechanical brakes_even When overeXcited_Would not produce enough
torque to permit a band blade in the Friemann band cutter to stop Within lOms, the
Court concludes one of ordinary skill in the art in March 2001 Would not be capable
of building the Friemann band cutter Without undue experimentation
63
The Court therefore finds the Friemann patent nonenabled With respect to
SD3’s Claims l and 24.
ii. SD3’s Claims 22 and 23
SD3’s remaining claims all involve the stopping of the cutting tool in less than
lOms.21 In light of the above findings, the Court concludes a preponderance of the
evidence shows that undue experimentation Would be required for a person of
ordinary skill in the art as of March 2001 to obtain and use a motor and an
electromechanical brake or brakes able to provide sufficient torque to stop the
Friemann band cutter Within 7ms or 5ms, if it could be done at all.
The Court finds that the Friemann patent is nonenabled With respect to SD3 ’s
Claims 22 and 23.
3. SD3 ’s Claim 305 Less Thcm 5 Mz`lliseconds
Because the Friemann patent does not claim to stop its band blade in less than
5ms, the BPAI found that Friemann rendered SD3 ’s Claim 30 unpatentable for
obviousness, rather than anticipation. But as previously noted, prior art must enable
21 Claim 22 recites a machine With a brake mechanism “adapted to stop at least one motion of the
cutting tool Within 7 milliseconds after detection of the unsafe condition.” PXl Ol. Claim 23 recites
the same language, except that it requires a stopping time of “Within 5 milliseconds.” See id. SD3’s
last claim, Claim 30, will be addressed beloW.
64
one of ordinary skill in the art to build the claimed invention in order to deny it patent
protection under § lOS(a). Kumar, 418 F.3d at 1368.
The Court has previously found that the Friemann patent could not enable one
of ordinary skill in the art to build a band cutter capable of stopping a band blade
Within lOms of a user’s flesh coming into contact With the blade. That analysis took
into account the use of multiple brakes, overexcitation, the FL-1838 motor, and the
possibility of` inducing slippage. The PTO argued, however, that these same methods
could be used to enable one of ordinary skill in the art to fashion a band saw capable
of stopping the band blade Within 5ms. Because the Court has rejected that argument
in the lOms time-frame, it also rejects the argument in the 5ms time frame. Indeed,
Dr. Landy, one of the PTO’s experts, testified that it Was “[a]bsolutely” not feasible
to achieve stopping times of less than 5ms With Friemann’s band cutter. TT.
5/l l/2016 P.M. at 30116.
Accordingly, the Court finds that a preponderance of the evidence shows that
undue experimentation Would be required for a person of ordinary skill in the art in
March 2001 to obtain and use a motor and an electromechanical brake or brakes able
to provide sufficient torque to stop the blade in Friemann’s band cutter in less than
5ms, if it could be done at all.
65
Therefore, the Friemann patent is not prior art capable of rendering SD3’s
Claim 5 unpatentable for obviousness
IV. CONCLUSION
For the foregoing reasons, the Court finds in favor of SD3. A separate
judgment shall issue this date.
§§ c. M
yee C. Lamberth
United States District Judge
DATE: 8/7, /, 4
66